Better late than never: Italy finally joins the Unitary Patent

On 30 September 2015, Italy finally joined the unitary patent ("UP"), becoming the 26th Member State to be involved in the enhanced cooperation procedure aimed at adopting the Regulation instituting the unitary patent.

On 30 September 2015, Italy finally joined the unitary patent ("UP"), becoming the 26th Member State to be involved in the enhanced cooperation procedure aimed at adopting the Regulation instituting the unitary patent.

To date, only Spain and Croatia are still missing.

Those who have been following the debate will not be surprised by this latest decision made by the Italian Government to agree to full participation in the unitary patent package. What is surprising, however, is the speed of the adoption process, especially in light of the fact that the rumours of a possible change of mind only started at the beginning of this year.

In February 2015, the Italian Minister of Economic Development declared that Italy's participation to the new system was a priority for the Government.  Consequently, in May 2015 the Interministerial Committee for the European Affairs announced that a reviewing of the Italian position on the unitary patent package was underway and, in June, the Parliament's Chamber of Deputies passed a resolution in favour of Italy's participation. By letter dated 2 July 2015, Italy notified its intention to participate in enhanced cooperation in the area of the creation of unitary patent protection, which was registered as received by the Commission on 20 July 2015. Finally, a few months later, with decision No. 2015/1753 dated 30 September 2015, the European Commission confirmed and formalised Italy's participation to the enhanced cooperation.

The decision followed a meeting between EPO's President, Mr Benoît Battistelli, and Italy's Under Secretary of State to the Ministry of Economic Development, Mrs Simona Vicari, where discussions centred on the economic impact of the unitary patent in the Italian market. The debate highlighted the benefits that the unitary patent would have on small and medium-sized enterprises (SMEs), which constitute the backbone of the Italian economy.

Since the beginning of discussions on the unitary patent package in Italy, the focus was on the possible negative impact that it might have on the Italian industries and, in particular, on the possible high translation costs of the unitary patent. However, the meeting clarified that the system would benefit both the inventors and SMEs, who would be able to take advantage of a simplified procedure to obtain a patent in most European countries, save registration costs up to 80% and profit from the special fees provided for SMEs.

Among the changes that this decision brings, it is important to highlight that Italy may now participate (as it did on 13 October 2015 for the first time) as a full member to the discussions of the Select Committee.  This committee is the entity which supervises the EPO's activities related to the tasks entrusted to it in the context of unitary patent protection and contributes to the drafting of the rules to be adopted, also at a financial level, the Select Committee overseas the practicalities for implementation of the new system.  Thus in being involved in these discussions, Italy now has the chance to give voice to its opinions and requests.

All considered, the news has been welcomed by both specialist practitioners and the public alike as positive. It is generally agreed that it would have been a great disadvantage for Italian companies to be among the few excluded from a European system involving most Member States. In addition, as highlighted by Mr Battistelli, Italy's decision is also good news for Europe, enlarging the market of the new patent scheme and reinforcing the attractiveness of the European market for foreign countries, in particular considering the fact that Italy is the fourth most designated country by European patent holders.

So, what is next? Italy needs to go through the process of ratification of the Agreement on the Unified Patent Court, which has been ratified by eight countries to date (namely, Austria, Belgium, Denmark, France, Luxemburg, Malta, Portugal and Sweden) out of the thirteen necessary to enter into force. It is expected that the unitary patent will become effective in early 2017 and Italy will now no longer be a mere spectator.

By Maria Luigia Franceschelli, Milan, Hogan Lovells

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